Antitrust Law Daily Wrap Up, ADVERTISING—9th Cir.: First Amendment did not shield Electronic Arts from publicity rights claims for unauthorized use of player likenesses in NCAA Football video games, (Aug 1, 2013)

By Cheryl Beise, J.D.

The federal district court in Oakland properly rejected a motion by video game developer Electronic Arts (“EA”) to strike former college football player Samuel Keller’s right of publicity complaint as a strategic lawsuit against public participation under California’s anti-SLAPP statute, the U.S. Court of Appeals in San Francisco has held (In re NCAA Student-Athlete Name & Likeness Licensing Litigation, July 31, 2013, Bybee, J.).

EA was the producer of the NCAA Football series of video games, which allowed users to control avatars representing college football players as they participated in simulated games. NCAA Football sought to replicate each school’s entire team as accurately as possible, except that EA omitted players’ names from their avatars’ jerseys and assigned each player a fictitious home town. Keller filed a putative class-action lawsuit on behalf of college athletes, asserting that EA violated their rights of publicity under California Civil Code § 3344 and California common law by using their likenesses in the NCAA Football video game series. EA filed a motion to strike the complaint pursuant to California’s Anti-SLAPP statute, California Cal. Civ. Proc. Code § 425.16.

SLAPP statute. California’s anti-SLAPP statute is designed to discourage suits that “masquerade as ordinary lawsuits but are brought to deter common citizens from exercising their political or legal rights or to punish them for doing so.” To prevail on an anti-SLAPP motion, a defendant must first “make a prima facie showing that the plaintiff’s suit arises from an act by the defendant made in connection with a public issue in furtherance of the defendant’s right to free speech.” Then, the burden shifts to the plaintiff show “a reasonable probability” of prevailing on his or her claim.

Keller did not contest that EA succeeded in making the threshold showing, i.e., that EA’s NCAA Football games qualified for First Amendment protection and that Keller’s suit arose from EA’s production and distribution the games in furtherance of EA’s protected right to express itself through video games, the court noted.

Nor did EA contest that Keller adequately stated a right-of-publicity claim under California common and statutory law. Instead, EA asserted four affirmative defenses to Keller’s claims, derived from the First Amendment: the “transformative use” test, the Rogers test, the “public interest” test, and the “public affairs” exemption. The appeals court considered each in turn.

Transformative use test. In Comedy III Prods., Inc. v. Gary Saderup, Inc., 21 P.3d 797 (2001), the California Supreme Court formulated the “transformative use” defense to publicity rights claims. Based on the copyright concept of fair use, the transformative use test asks whether the work in question adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.

The court explained that, in the context of an anti-SLAPP motion to strike, the movant must prove that it is entitled to the transformative use defense as a matter of law in order to prevail. Therefore, in order to succeed on its motion, EA was required to show that no reasonable trier of fact could conclude that NCAA Football was not transformative.

EA’s use of Keller’s likeness did not contain significant transformative elements such that EA was entitled to the defense as a matter of law, the court determined. NCAA Football factually represented Keller as what he was—the starting quarterback for Arizona State and Nebraska. The game “literally recreates Keller in the very setting in which he has achieved renown,” the court observed.

EA argued that the district court erred in focusing primarily on Keller’s likeness and ignoring the transformative elements of the game as a whole. EA also contended that the fact that NCAA Football users could alter the characteristics of the avatars in the game made it transformative.

The court disagreed. This case was similar to No Doubt v. Activision Publishing, Inc., 122 Cal. Rptr. 3d 397 (2011), in which a California court of appeals determined that Activision’s Band Hero video game was not transformative because video game player avatars were “literal recreations of the band members,” doing “the same activity by which the band achieved and maintains its fame.” In the absence of a California Supreme Court decision directly on point, the court determined that No Doubt offered “a persuasive precedent that cannot be materially distinguished from Keller’s case.”

The court also cited the Third Circuit’s rejection of EA’s transformative use defense in Hart v. Electronic Arts, Inc., 717 F.3d 141 (3d Cir. 2013), a nearly identical publicity rights case brought by another player whose likeness EA used in NCAA Football. The Third Circuit determined that creative elements of NCAA Football games as a whole and the users’ ability to alter avatar characteristics were not transformative.

“Given that NCAA Football realistically portrays college football players in the context of college football games, the district court was correct in concluding that EA cannot prevail as a matter of law based on the transformative use defense at the anti-SLAPP stage,” the court concluded.

Rogers test. EA urged application of the framework set forth by the Second Circuit in Rogers v. Grimaldi, 875 F.2d 994 (2nd Cir. 1989). In Rogers, the Second Circuit held that the right of publicity did not bar use of the title “Ginger and Fred” for a movie because the title clearly related to the content of the movie (i.e., was artistically relevant) and was not a disguised advertisement for the sale of goods and services or a collateral commercial product.

The Ninth Circuit has expressly adopted the Rogers test to evaluate a defendant’s use of a trademark or other identifying material in an artistic or expressive work in the context of Lanham Act claims. In Brown v. Electronic Arts, Inc., a separate decision issued on the same day, the Ninth Circuit affirmed a district court’s use of Rogers in dismissing a former football player’s Lanham Act §43(a) claim against EA.

The Rogers test was designed to protect consumers from the risk of consumer confusion—the hallmark element of a Lanham Act claim. The right of publicity, on the other hand, protects the celebrity, not the consumer, the court explained. Keller’s publicity claims were not founded on an allegation that consumers are being illegally misled into believing that he is endorsing EA or its products. Instead, Keller claimed that EA appropriated, without permission and without providing compensation, his talent and years of hard work on the football field. The Third Circuit in Hart had reached the same conclusion about former NCAA football player Ryan Hart.

The court noted that the Sixth Circuit was “the only circuit court to import the Rogers test to the publicity arena.” The Ninth Circuit declined to follow suit.

Other defenses. EA asserted two additional speech-related defenses to Keller’s publicity rights claims— the public interest defense and the public affairs exemption. Both defenses protect the reporting of factual information under state law. The public interest defense precludes liability for common law right of publicity claims with regard to the “publication of matters in the public interest.” The public affairs exemption forecloses liability for statutory right of publicity claims for the “use of a name, voice, signature, photograph, or likeness in connection with any news, public affairs, or sports broadcast or account, or any political campaign.” Cal. Civ. Code § 3344(d).

EA argued that these defenses gave it the right to “incorporate athletes’ names, statistics, and other biographical information” into its expressive works. It was clear, however, that both defenses protect only the act of publishing or reporting, the court said. While there is little judicial guidance as to when a communication constitutes a publication or reporting, the court concluded that EA was not covered by the defenses because EA was not publishing or reporting factual data in NCAA Football. Although EA incorporated certain actual player information into the game (height, weight, etc.), EA did not include the athletes’ names along with their likenesses and statistical data. “Put simply, EA’s interactive game is not a publication of facts about college football; it is a game, not a reference source,” the court said.

Dissent. Circuit Judge Sidney R. Thomas filed a dissenting opinion. “Because the creative and transformative elements of EA’s NCAA Football video game series predominated over the commercial use of the athletes’ likenesses, the First Amendment protects EA from liability,” Judge Thomas wrote.

The creative elements of EA’s game satisfied the transformative use test in favor of First Amendment protection, in Judge Thomas’s view. “The sheer quantity of the virtual players in the game underscores the inappropriateness of analyzing the right of publicity through the lens of one likeness only.” Judge Thomas also noted that, as a qualitative matter, the ability of college athletes to license their publicity rights is remarkably restricted under NCAA rules.

The case is No. 10-15387.

Attorneys: Kelli L. Sager (Davis Wright Tremaine LLP) for Electronic Arts, Inc. Steve W. Berman (Hagens Berman Sobol Shapiro LLP) for Samuel Michael Keller, Edward O’Bannon, Jr., Byron Bishop, Michael Anderson, Danny Wimprine, Ishmael Thrower, Craig Newsome, Damien Rhodes, and Samuel Jacobson.

Companies: Electronic Arts, Inc.

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